PTAB/USPTO Update - July 2021

USPTO Leadership

  • Drew Hirshfeld is still performing the functions and duties of Director. The Biden Administration has not made an announcement as to who will be nominated to become the next Director.

United States v. Arthrex, Inc.

  • On June 21, 2021, the Supreme Court issued a decision in United States v. Arthrex, Inc., No. 19-1434 holding that APJs are principal officers and striking down restrictions on the Director’s authority to unilaterally review final decisions of the Patent Trial and Appeal Board (PTAB).
  • On June 29, 2021, the United States Patent and Trademark Office (USPTO) issued information on implementation of the Supreme Court’s decision in U.S. v. Arthrex, including an interim procedure to request Director review of a final decision. The information includes new Arthrex implementation and Arthrex Q&As pages.

USPTO News

  • The June 2021 update of the Trademark Trial and Appeal Board Manual of Procedure (TBMP) is now available, which describes current practice and procedure under the applicable authority and relevant case law reported between March 1, 2020, and February 28, 2021.
  • The USPTO hosted two roundtables to hear public input and questions on the Trademark Modernization Act of 2020 (TMA) notice of proposed rulemaking (NPRM) that was published on May 18. 
  • Nominations for the Patent and Trademark Public Advisory Committee are due on or before July 9, 2021.
  • The USPTO is extending the submission deadline to December 31, 2022 for new schools to expand its Law School Clinic Certification Program.
  • Commissioner for Trademarks David Gooder discussed the implications of a 63% surge in trademark applications in the last year on the Director’s Forum.
  • Attorney Kimberly Weinrich of the Office of Enrollment and Discipline and Supervisory Patent Attorney Steven J. Fulk of the Patent Trial and Appeal Board conducted a Boardside Chat on June 17, 2021 about the mechanics of admission to practice before the Board.
  • The USPTO is seeking nominations for the 2021 National Medal of Technology and Innovation (NMTI).  Nominations can be submitted online through July 30, 2021.
  • Drew Hirshfeld performing the functions and duties of the Under Secretary of Commerce for Intellectual Property and Director of the USPTO and Coke Stewart performing the functions and duties of the Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO, attended the Virtual 2021 IP5 Heads of Office meetings on June 21-23.
  • The USPTO and the State Bar of Texas’ Intellectual Property Law Section hosted a celebration commemorating the 7th anniversary of the passage of the Lanham Act.

Legislation

  • Senators Patrick Leahy and Thom Tillis submitted an amendment to the U.S. Innovation and Competition Act to increase transparency around U.S. patent ownership, including penalties for failure to properly record certain assignments with the PTO. This amendment, which was included alongside other amendments to the United States Innovation and Competition Act of 2021, has been agreed to in the Senate.

Notices, Guidance and Requests

Final Rules

Interim Rules

  • There are no interim rules.

Proposed Rules

  • There are no proposed rules.

PTAB Decisions

  • New Precedential PTAB Decisions
    • There are no new precedential PTAB decisions.
  • New Informative PTAB Decisions
    • There are no new informative PTAB decisions.

New Requests for POP Review

  • Dropworks, Inc. v. Univ. of Chi., IPR2021-00100 [Notification of Receipt of POP Request issued June 16, 2021] [Petitioner requests “[r]eview … to clarify that there is no per se rule precluding [inter partes] review even if a prior art reference previously considered by the Office is viewed as a ‘primary’ reference in a different combination with newly submitted art not previously considered.”]
  • Kretek Int’l, Inc. v. wm17 holding GmbH, IPR2021-00480 [Notification of Receipt of POP Request issued June 9, 2021; Notification of Receipt of POP Request: Amicus Forms issued June 24, 2021] [Co-Petitioner requests review to determine “[(1)] whether a party who participates minimally and without control over its Co-Petitioners in an IPR petition is necessarily a real-party-in-interest (“RPI”) as to its copetitioners and [(2)] whether that third-party should be permitted to withdraw and terminate a petition as to itself subsequent to the filing of such petition.”]

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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